First Named Inventor: Michael D. Bodnar Application No.: 10/714,705
-6-
REMARKS
This is in response to the Office Action mailed on October 2 1 , 2004, in which claims
1 -3, 7, 8 1 1 and 14 were rejected under 35 U.S.C. § 1 02(b) as being anticipated by Shagott et al., U.S.
Patent No. 5,593,470 (Shagott); claims 4 and 9 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shagott in view of Basch et al., U.S. Patent No. 5,717,157 (Basch); claims 6 and
10 were rejected under 35 U.S.C. § 103(a) as being unpatentable over Shagott in view of Cooper,
U.S. Patent No. 5,205,155 (Cooper); and claims 5, 12 and 13 were objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in independent form including all
of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 U.S.C. § 102(b)
Claims 1-3, 7, 8, 11 and 14 were rejected to under 35 U.S.C. § 102(b) as being
anticipated by Shagott et al., U.S. Patent No. 5,593,470 (Shagott). In order to constitute a § 102(b)
reference, the reference must teach each and every limitation of the claims. However, Shagott does
not disclose or teach every limitation of the claimed invention.
Shagott discloses a modular filtration system (10) for cleaning HVAC ductwork.
(Abstract). The Shagott system is a portable filtration unit (10) that contains up to four separate
maintained filters: a large particle filter (20), and electrostatic filter (30), a bag filter (38), and a
HEPA filter (48). (Col. 2, lines 63-67). The multiple filters exhaust clean air while dealing with the
debris found in HVAC ductwork. (Col. 2-3, lines 67 and 1-2).
More particularly, Shagott discloses a filtration unit (10) with several chest-like
modules which are maneuvered using carrying handles (84) and are connected for use by cam locks
(12). (Col. 3-4, lines 66-67 and 1-2). The filtration unit is of wheel-mounted, modular design, with
the motors, blowers and filters housed in separate easily connected compartments. (Col. 3, lines 6-
8). The unit contains modules small enough to permit the modular structure to pass through typical
residential doorways so that unit can be transported to the HVAC system to be cleaned. (Col. 3,
lines 9-13). Inlet module (14) includes an air inlet (16) to which duct connector (18) is attached.
(Col. 4, lines 5-7). Duct connector (18) may be straight or angled and join a single duct inlet (16)
or may join multiple smaller ducts to inlet (16) for multiple vacuum inlets. (Col. 4, lines 1 1-14 and
First Named Inventor: Michael D. Bodnar Application No. : 1 0/7 1 4,705
-7-
Figs. 1 and 4). Therefore, the Shagott patent discloses a filtration unit that is connected externally
to the HVAC system.
Unlike the Shagott patent, the present invention discloses an air quality test kit that
is placed within an existing filter housing of a heating and ventilation system. Claims 1 and 8 have
been amended to define more precisely that the support fits within the heating and ventilation system
and that the test filter is installed within the heating and ventilation. Amended claims 1 and 8 do not
raise a new issue, but merely state explicitly in the "support" element what is already stated in the
preamble - that the "filter housing" and the "particulate filter" are part of the heating and ventilation
system. The amendments to claims 1 and 8 are made in response to the Examiner's comments in
the Response to Arguments section of the Office Action, in which the Examiner stated ". . . it is
noted that the features upon which applicant relies (i.e., elements to be fit into a heating and
ventilation system) are not recited in the rejected claim(s)." (Office Action, page 4).
Unlike the Shagott patent, the present invention discloses an air quality test kit that
is placed within an existing filter housing of a heating and ventilation system. The present invention
discloses that the support fits within the heating and ventilation system, and that the test filter is
installed within the heating and ventilation system. Therefore, the present invention requires a
support shaped to fit in the filter housing of the heating and ventilation system. The present
invention also requires a test filter adjacent to the particulate filter of the heating and ventilation
system within the filter housing of the heating and ventilation system.
The Shagott patent does not disclose an air quality test kit that is installed within an
existing heating and ventilation system. In fact, Shagott never mentions placing any of the four
filters used in the filtration unit (10) within the heating and ventilation system. Therefore, Shagott
does not disclose or teach an air quality test kit having a support and a test filter within the filter
housing of an existing heating and ventilation system. Amended independent claim 1 along with
dependent claims 2, 3 and 7 that depend therefrom and amended independent claim 8 along with
dependent claims 11 and 14 that depend therefrom are allowable over the prior art of record.
Accordingly, the rejection of these claims under 35 U.S.C. § 102(b) should be withdrawn.
First Named Inventor: Michael D. Bodnar Application No.: 10/714,705
-8-
Claim Rejections - 35 U.S.C.S 103(a)
Claims 4 and 9 were rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shagott in view of Basch. As discussed above, amended independent claims 1 and 8 are not
anticipated by Shagott. Therefore, dependent claims 4 and 9 no longer depend from rejected base
claims. Accordingly, the rejection of claims 4 and 9 under 35 U.S.C. § 103(a) should be withdrawn.
Claims 6 and 10 were rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shagott in view of Cooper. As discussed above, amended independent claims 1 and 8 are not
anticipated by Shagott. Therefore, dependent claims 6 and 10 no longer depend from rejected base
claims. Accordingly, the rejection of claims 6 and 10 under 35 U.S.C. § 103(a) should be
withdrawn.
Allowable Subject Matter
Claims 5, 12 and 13 were objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims. With this Amendment, new claims 15-17 have been
added. Claim 15 combines the limitations of claim 1 and claim 5. Claim 16 combines the
limitations of claims 8, 1 1 and 12. Claim 17 combines the limitations of claim 8 and claim 13.
Claims 15-17 are allowable over the cited references. Reconsideration and notice to that effect is
respectfully requested.
r
First Named Inventor: Michael D. Bodnar Application No.: 10/714,705
-9-
Conclusion
In view of the above comments and amendments, it is believed that all claims in
the present application are in condition for allowance. Reconsideration and allowance of claims
1 - 1 7 is respectfully requested.
The Commissioner is hereby authorized to charge any additional fees associated
with this paper or credit any overpayment to Deposit Account 1 1-0982.
Any inquiries regarding this application should be directed to David R. Fairbairn
at (612) 339-1863.
Respectfully submitted,
KINNEY & LANGE, P.A.
Date: tlj/*y/of By:
David R. Fairbairn, Reg. No. 26,047
THE KINNEY & LANGE BUILDING
312 South Third Street
Minneapolis, MN 55415-1002
Telephone: (612)339-1863
Fax: (612)339-6580
DRF:SLR:dlo